IP: What’s in a name?

Generic domain names are often not protected under trademark law

The heart of trademark law is brand recognition and source identification. A successful trademark  is a mark that immediately conveys to the relevant public the source of the goods and services, the brand. Since trademark law is intended to protect the consumer, it is only fitting that generic marks are not protectable. A generic mark is generally thought of as being devoid of any source indicating significance and simply the common name for a good or service. Unlike descriptive marks, nothing can make a generic mark registrable, and as the Federal Circuit and the U.S. Patent & Trademark Office (USPTO) continue to argue, not even turning a generic word into a domain name by adding “.com.” will make a generic term registrable.   

In 2001, the Federal Circuit held that 1-888-M-A-T-R-E-S-S was not generic and unregistrable as a trademark, even though the components 1-888 and M-A-T-R-E-S-S alone would not be protectable. The addition of the area code was enough to create registrable trademark rights, although the court noted that M-A-T-R-E-S-S standing by itself would be considered generic for retail services in the field of mattresses. Since this Federal Circuit decision, however, the USPTO and Federal Circuit have consistently denied trademark protection to applicants whose marks are comprised of “.com” in connection with an otherwise generic term

Contributing Author

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Brett Garner

Brett Garner is of counsel at Venable LLP. He has been counseling clients in the online space since the early 2000s and combines his background in...

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Contributing Author

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Deborah Feinblum

Deborah Feinblum is an attorney at Venable LLP. She focuses her practice on a wide variety of intellectual property matters, including intellectual property litigation, trademark...

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